There had also been previously an arrangement of machinery whereby two chucks, each adapted to a single sickle-section, were placed about three feet apart and the hammers actuated by machinery, as described above, and worked simultaneously upon the edges of these sections.

The complainant relies upon the first, fourth, and fifth claims, which are as follows:

1. In a serrator, the combination with a chuck adapted to maintain two sections in position side by side, of a serrating-tool adapted to be moved along the outer edge of one of said sections, a second serrating-tool adapted to be moved along the outer edge of the other section, and means for simultaneously moving said serrating-tools from the bases to the tips of the respective sections, or vice versa, substantially as described.

4. The method of serrating sickle-sections, which consists in maintaining the sections in position side by side, serrating the outer edges by machine-actuated serrating-tools, transposing the sections and then serrating in a similar manner the outer edges of the transposed sections, substantially as described.

5. The method of serrating sickle-sections, which consists in maintaining the sections in position side by side, simultaneously serrating one edge of each of the sections by machine-actuated serrating-tools, transposing the sections, and then simultaneously serrating in a similar manner the unserrated edges of the transposed sections.

The two last-mentioned claims are process claims. It is my opinion that under the case of Risdon Iron & Locomotive Works v. Medart (C. D., 1895, 330; 71 O. G., 751; 158 U. S., 68) these claims cannot be sustained. Except for the described functions of the machine there is nothing more stated in the patent than the fact of a manual transposition of the sickles after their outer edges have been serrated, so that the inner edges may undergo a like operation. Such transpositions, superadded to the functions of the machine, do not make the treatment and method or process or art such as the patent law comtemplates..

The first claim is for a combination and depends upon whether the element of the combination described as a "chuck," adapted to maintain two sections in position side by side, is novel and patentable. Its novelty is not denied. The only serious question is whether it evinces invention or merely mechanical adaptation.

It is in a certain sense only the duplication of the old chuck, and seems very simple and obvious; but it must be remembered that the simple chuck was in use for many years, and that the need of some device whereby the two edges of the section could be serrated at the same time had been long felt and recognized. If this chuck were obvious to mere mechanical skill, why had not such skill, already called upon, supplied the need before? I fear that under these circumstances, were I to hold it mere mechanical adaptation I would be considering myself a wiser and better mechanic than those who for years had overlooked this method of accomplishing a desirable result.

This opinion is reinforced by the fact that the defendants themselves immediately, on their attention being called to this device, recognized its value and importance and began negotiations for its acquirement.

It seemed, doubtless, to them an important improvement, long needed but long overlooked. It is original conception, not skill, that supplies a remedy for a defect long but hitherto vainly looked for. The proof satisfies me that the defendants have used the combination described in the first claim.

A decree may therefore be entered in favor of the complainants upon the first claim, and dismissing the bill as to the fourth and fifth.

[U.S. Circuit Court of Appeals-Sixth Circuit.]

THOMSON-HOUSTON ELECTRIC COMPANY v. OHIO BRASS COMPANY et al.

Decided May 17, 1897.

80 O. G., 654.

1. VAN DEPOELE-SUSPENDED SWITCH FOR ELECTRIC RAILWAYS-VALIDITY— PRIOR PATENT.

Letters Patent No. 424,695, granted April 1, 1890, to Charles J. Van Depoele, for impovements in suspended switches for electric railways, is not invalid because of the prior issuance of Patent No. 397,451, for certain improvements on the broad invention covered by the first-named patent, the application for which was filed more than a year before that of Patent No. 397,451. 2. SAME-SAME-SAME.

Letters Patent No. 495,443, granted April 11, 1893, to Charles J. Van Depoele, for improvements in suspended switches and traveling contacts for electric railways, not held invalid upon an appeal from a preliminary injunction heard upon affidavits and without a full review of the art because of the prior issuance to the same inventor of Patent No. 424,695, covering inventions of a similar character. 3. Two PATEnts-Earlier Patent for IMPROVEMENTS-VALIDITY.

Where a patent for mere improvements was granted during the pendency of an earlier application for the broad invention, Held that a patent subsequently granted on the earlier application is not invalid, though the elements covered by its claims were shown and described but not claimed in the earlier patent. (Cases of Suffolk v. Hayden, 3 Wall., 315, and Barbed Wire Patent, C. D., 1892, 299; 58 O. G., 1555; 143 U. S., 280, discussed.)

4. SAME-SAME-EXTENSION OF MONOPOLY-INFRINGEMENT

DAMAGES.

Where a patent for an improvement issues while the application for the broad invention is pending in the Patent Office, Held that the monopoly in the broad invention is not extended. The patent for the improvement expires in seventeen years. After that anyone may use the improvement without infringing the patent issued upon it. If he uses the improvement without a license to use the main invention, he is liable for the infringement, not of the patent for the improvement, but of the patent for the main invention, and in estimating the damages for the same the value of the main invention, and not that of the improvement, would be the basis for estimating the damages.

5. SAME-SAME-SAME-PATENTS ISSUING TO DIFFERENT OR SAME PARTIES.

It can make no difference in considering this question whether the patent for the improvement issues to the patentee of the main invention or to another. The right of the public to use the improvement when the patent on it expires is exactly the same whether the patentees of the two inventions are the same or not, because in each case the improvement can only be used with the license of the patentee of the main invention.

6. PRELIMINARY INJUNCTION-APPEAL-WEIGHT OF DECISION OF LOWER COURT. On an appeal from an order granting a preliminary injunction the case is ordinarily to be treated in the appellate court from the standpoint from which it was viewed by the Circuit Court, and the decision on the merits by a circuit court of another circuit sustaining the patent is therefore usually of controlling weight in the appellate court, as it should be in the court below.

7. CONTRIBUTORY INFRINGEment-Supplying Element OF A COMBINATION.

Where one makes and sells one element of a combination covered by a patent, with the intention and for the purpose of bringing about its use in such a combination, he is guilty of contributory infringement and is equally liable to the patentee with him who in fact organizes the complete combination.

8. Same-Same-Intent of PARTY SUPPLYIng Element—INJUNCTION.

Where a party makes a device which is adapted to be used only in a patented combination and is offering said device for sale to the public, he is legally presumed to intend the natural consequences of his act, and it is therefore Held that he intended that the device made should be used in the patented combination, and an injunction will be granted.

9. SAME-SAME-SAME-EFFECTIVE MODE OF PREVENTING INFRINGEMENT.

Many of the most valuable patents are combinations of non-patentable elements, and the only effective mode of preventing infringement is by suits against those who by furnishing the parts which distinguish the combination make it possible for others to assemble and use the combination, and who by advertisement of the sale of such parts and otherwise intentionally solicit and promote such invasions of the patentee's rights.

10. SAME-SAME-LIABILITY.

A party may furnish parts for repairing and renewing a patented combination, but when he does so he must ascertain, if he would escape liability for infringement, that the one buying and using them for this purpose has a license, express or implied.

APPEALS from the Circuit Court of the United States for the Northern District of Ohio.

Before TAFT, LURTON, and CLARK, Judges.

Mr. Frank T. Brown for the appellants.

Mr. Frederic H. Betts and Mr. F. P. Fish for the appellee.

STATEMENT OF THE CASE.

These are appeals in two patent cases between the same parties that present questions of such a similar character that they were argued together and may be properly disposed of in one opinion. The appeals are from orders of preliminary injunction made before a hearing upon the merits. The first case was a suit by the Thomson-Houston Electric Company to enjoin the alleged infringement by the Ohio Brass Company of United States Letters Patent No. 424,695, for certain new and useful improvements in suspended switches for electric railways, issued to Charles J. Van Depoele April 1, 1890, and assigned, by mesne assignments, to the complainant below. A preliminary injunction was issued against the making and selling by the defendant below of overhead conductor-switches for electric railways for use in the combinations covered by the third, fourth, and eleventh claims of the patent. The second case was a suit by the same complainant against the same defendant for an alleged infringement of United States Letters Patent

No. 495,443, issued to Charles J. Van Depoele, for new and useful improvements in suspended switches and traveling contacts for electric railways, and assigned, by mesne assignments, to the complainant below. A preliminary injunction before the hearing on the merits was granted, enjoining the defendant from the manufacture or sale of trolleys or trolley-bases intended to be used in the sixth, seventh, eighth, twelfth, or sixteenth claims of said patent. It appeared in the first case that in a suit before Judge Coxe, in the Northern District of New York, the validity of Patent No. 424,695 was in issue, and the validity of the claims here involved was sustained. (69 Fed. Rep., 257.) The cause was carried to the Circuit Court of Appeals for the Second Circuit, and the order of injunction, so far as the claims here involved were concerned, was affirmed, though the complainant was required to enter a disclaimer as to certain other claims in the patent-to wit, the second, ninth, and tenth-which disclaimer was duly made and filed in the Patent Office. (18 C. C. A., 145; 71 Fed. Rep., 396.) In the second case it appeared that the validity of Patent No. 495,443 had been at issue in a cause heard upon its merits and passed to final decree before Judge Townsend, in the District of Connecticut, (C. D., 1895, 788; 73 O. G., 2155,) and that the claims of the patent here involved were sustained.

There were two principal objections made in this court to the injunc tions below. The first was that there was not any proof of actual infringement or of an intention to infringe the combinations covered by the claims set forth in the orders of injunction appealed from. The second objection was that the Patents Nos. 424,695 and 495,443 were both void, the latter because the former, a patent of earlier issue, was for the same invention, and the former because Patent No. 397,451, a still earlier patent issued to the same patentee, covered and was also for the same invention. Upon the first objection in the two cases the evidence was substantially the same. The claims in both patents covered combinations of parts used in an electric street railway in which the track, the car, the overhead conductor and switches, and the trolley or contact device formed elements. The charge of infringement in the first case, involving Patent No. 424,695, was based on an admitted sale by defendant of an overhead switch, and the charge as to infringement of No. 495,443 was based on an admitted sale of a trolley, pole, and contact wheel. The sales were made at the same time to au agent of the complainant. The agent of the defendant who sold says that he suspected that the purchaser was an agent of complainant. The memorandum of sale of these articles and receipt for the price, signed by defendant, were as follows:

MANSFIELD, OHIO, Feb. 4, 1896.

The Ohio Brass Co., sold to Edwin W. Hammer, Newark, N. .—

1 Str. Under-Running Adj. Switch, No. 1145

1 12-inch Pole Ohio Trolley Buck Harp T. H. Wheel Paid.

Feb. 4, 1896.

$2.25 15.50

THE OHIO BRASS CO.,

Per L. P. BENNETT,

Cashier.

A book admitted to be a catalogue printed by defendant and circulated by it in the trade was offered-in evidence. This purported on its face to be a catalogue of electric-railway material and supplies made by defendant and offered by it for sale generally to the trade. Below are excerpts from the catalogue containing illustrations of the articles exactly like those bought from defendant by Hammer:

This trolley is one of the simplest and most effective on the market. It is made up of eight pieces, the working parts of which are made of steel, and maleable and wrought iron. The base and stand is three feet long, eight inches wide, and, when the trolley-pole is in a horizontal position, but thirteen inches high. The trolleypole can be swung either forward or backward, or in a complete circle. It can be assembled or dismantled in a few minutes' time without the aid of tools. sion on the pole is least when drawn down, and can be adjusted to suit, making it especially desirable for running under low structures.

BUCKEYE TROLLEY HARP.

The ten

This style of harp is made for use with steel trolley-poles. It is light and strong in construction, and designed to avoid any danger from being caught by the overhead wires.

These are similar in design to the Wood's adjustable switch, as shown on the preceding page, except that the tongues are so modified as to make a perfectly straight underrunning approach to the switch-pan for the trolley-wheel.

No. 1145-Two-way

...each sẽ.50